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Tuesday, 23 February 2016

In the EPC case-law, the standard of proof for the public availability of documents or information which are completely under the control of one of the parties (e.g. public prior use by the party) is said to be "up to the hilt". The "hilt" is the part of the sword that shields the hand or is the transition part of the sword from blade to the handle and I wonder who has had the idea to use this martial expression which sounds more like medieval inquisition than like civilized EPO proceedings in well-illuminated rooms.

In the decision T 2451/13, the board dealt with the public availability of a commercial brochure D16 bearing a "copyright date" 4 years before the filing date. Pictures identical to those of the brochure appeared in another publication. No further evidence that the brochure was indeed distributed and not kept in the drawer of the opponent had been offered.
The board summarizes the case-law and concludes that up to the hilt and beyond reasonable doubt are the same thing:

If the publication date of a document originating from an opponent (or a subsidiary thereof) is in dispute, the opponent must prove that date "up to the hilt". The yardstick for this proof is that of "beyond reasonable doubt" rather than "absolute certainty" (point 3.2).

The more detailed reasoning is as follows:

3.2.4 T 472/92 did not specify precisely the conditions to be fulfilled in order for a party to prove its case "up to the hilt". However, when discussing the disputed issues, the board stated that its conclusions were based on "... an extremely high degree of certainty", which is thus clearly the yardstick - rather than "absolute certainty" - for "up-to-the hilt" proof. It is thus evident that the standard of "up to the hilt" does not require absolute certainty but that "an extremely high degree of certainty" suffices.

"According to this decision [T 472/92], where practically all the evidence lies within the power of the opponent, the assessment of probability which normally underlies the boards' opinion must cede to a stricter criterion close to absolute conviction. In other words there should be a degree of certainty which is beyond all reasonable doubt" (T 97/94, point 5.1, insertion in square brackets by the present board).

"It is true that, in cases where only one party has access to information about an alleged public prior use, the case law has tended towards expecting that the public prior use be proved beyond any reasonable doubt ("up to the hilt"), answering the typical questions "What?", "When?", "Where?", "How?" and "To whom?", since the other party was reduced to merely pointing out inconsistencies or gaps in the chain of evidence; see T 472/92, reasons, point 3.1 (OJ EPO 1998, page 161)" (T 55/01, point 4.1).

"However, especially in cases where only one party had access to information about an alleged public prior use, the case law has tended toward expecting that the public prior use be proved beyond any reasonable doubt or "up to the hilt" (see e.g. T 55/01, point 4.1 of the Reasons, and T 472/92, OJ 1998, 161, point 3.1 of the Reasons)" (T 2/09, point 3.2).
Also in T 782/92, where a public prior use by the opponent had occurred, the standard of proof of "beyond reasonable doubt" was applied (point 2.2).

Lastly, in decision T 1553/06 (point 6.3.3), which dealt with the public availability of internet disclosures, it was stated that "Contrary to the opponent, the board regards the terms "beyond reasonable doubt" and the more colloquial term "up to the hilt" as being equivalent".

3.2.6 The board agrees with the appellant that the standard "up to the hilt" also applies to the present case. Document D16 originates from a company (Gerber) which is now a subsidiary of the respondent.

Therefore, all the evidence about the publication date of D16 is essentially in the hands of the respondent.
It thus has to be examined whether the respondent has proven beyond reasonable doubt that D16 was available to the public before the priority date of the patent.

D16 addresses parents and gives them instructions on how to feed their infants. In view of this, it would be contrary to life experience to assume that D16 was not published but rather kept by Gerber in the drawer for about 4 years, i.e. until at least (after) the priority date of the patent. This is corroborated by D17, which is an advertisement of Gerber in the spring 2002 edition of the journal PediatricBasics. In this advertisement, Gerber gives the same recommendations to parents and, in part, uses the same pictures as in D16. The board is therefore convinced that it is not only more likely than not, but quite clearly beyond reasonable doubt that D16 was published before the priority date of the patent.

This blogger had been eager to learn how double protection would be dealt with. Here it is: It will be possible to hold a national patent in parallel to a European Patent with Unitary Effect because, according to §15(1) of the draft amended IntPatÜG, the prohibition of double protection according to §8 IntPatÜG does not apply to European Patents with unitary effect. However, an infringement action based on such a national patent will be inadmissible if the EPC counterpart thereof is or was the subject of a procedure at the UPC (§18 of the draft legislation). This does not apply to nullity actions nor to utility models but does apply to cases where the UPC action is filed later than the national action. The defendant may render any pending national infringement action inadmissible at any time by filing a parallel action for declaration of non-infringement.

This "prohibition of double-enforcement" is applicable for patents claiming the same priority (priority date or priority application?) and originating from the same inventor and insofar as the patents protect the same invention. In cases of doubt, the national court may stay the procedure.

The draft legislation is supposed to pass the parliamentary chambers (Bundestag and Bundesrat) in Summer 2016.

Friday, 19 February 2016

The decision T915/10 relates to soybean plants and soybean seeds containing a DNA insert with the name "insertion event MON89788" which is supposed to improve the yield relative the a comparable line. The DNA can be inserted by inserting a larger section of DNA named SEQ ID NO: 9.

The board applies G 07/10 to judge wether or not claimed method is an "essentially biological process for the production of plants" pursuant to Article 53(b) EPC come to the conclusion that:

The method is defined solely by the technical process step of introducing SEQ ID NO: 9 into the genome of the plant by transformation of plant cells with heterologous DNA, i.e. a genetic engineering step introducing heterologous DNA in plant cells. The board notes that the introduced trait is due directly to the expression of the inserted DNA and is not the result of a plant breeding method characterised by crossing and selection. Indeed, the method as claimed does not require nor define steps of mixing genes of plants by sexual crossing and subsequent selection of plants, either explicitly or implicitly.

The underlined sentence above relates to the origin of the introduced trait. Does it matter if the artificially introduced trait of essentially biological origin or synthetic, i.e. if steps preceding the claimed method are essentially biological or not? The board appears to try finding the answer by drawing an analogy to "mixed" methods including crossing and selection steps and additional steps of a technical nature (emphasis added):

53. Furthermore, when considering patentability of plant breeding methods in the context of claims for methods including crossing and selection steps and additional steps of a technical nature and in contrast to the situation pertaining to processes containing a technical step which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants, the Enlarged Board of Appeal held that "[i]f, [...] such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, sothat the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC" (see decision G 2/07, supra, Headnote, Answer 3). This statement is considered by this board as confirming the patentability of methods for genetic engineering of plants (see decisions G 2/07 and G 1/08, supra).

Accordingly, the field of patentable genetic engineering methods outside of the realm of Art. 53(b) EPC starts where the method contains at least one step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome, irrespective of whether the preceding or subsequent steps are of essentially biological nature or what the origin of the introduced trait might be.